The Unified Patent Court (UPC) has marked its second anniversary, dramatically reshaping patent strategy across Europe. With hundreds of cases already filed, the UPC is proving to be a swift and influential court, forcing businesses to rethink how they protect and challenge patents. A critical aspect of this evolution is its dynamic relationship with EPO opposition proceedings. What crucial considerations must companies now consider to maximise the opportunities presented by these two powerful bodies?
The UPC: A Game-Changer for Patent Disputes
The UPC offers a centralized system for enforcing and challenging European patents in the 18 participating member states. This means a single court can now handle cases that previously required multiple national proceedings. It has quickly become known for its efficiency, often delivering judgments within 12 months, and has started to draw litigation away from national courts.
New Opportunities for Challenging Patents
One of the most significant changes is the UPC's power to hear standalone validity challenges and revoke patents across the participating states. Crucially, unlike EPO oppositions, there's no strict time limit for filing a UPC revocation action. This gives challengers a new window of opportunity, even if an earlier EPO opposition was unsuccessful.
Strategic Decisions: UPC vs. EPO
The ability to pursue both UPC and EPO proceedings in parallel creates powerful strategic options. This dual approach can exert immense pressure on patentees. However, businesses must carefully weigh several factors:
Scope: A decision from the EPO covers all 39 EPC member states, while a UPC decision is limited to the 18 currently participating member states. It's also worth noting the recent judgment of the EU Court of Justice in Case C-339/22 BSH Hausgeräte GmbH v Electrolux AB, which indicated that the UPC and national courts can rule on the validity of a patent where validity is raised as a defence, but such a decision only has effect between the parties.
Timing vs. Cost: The UPC aims to deliver judgments within 12 months, a pace largely met so far, whereas EPO oppositions typically take longer. However, the EPO now accelerates opposition proceedings if informed of parallel UPC or national court actions. While faster, UPC proceedings are likely to be more expensive than EPO oppositions.
Staying Proceedings: Article 33(10) of the UPC Agreement states: "The Court may stay its proceedings when a rapid decision may be expected from the European Patent Office." This gives judges discretion. An early decision from the Munich central division (UPC_CFI_80/2023 Astellas Institute for Regenerative Medicine v Healios K.K) held that a "concrete expectation" for a decision "in the near future" is required for a stay. More recently, in November 2024, the Court of Appeal (UPC_CoA_511/2024 Meril Life Sciences Pvt Limited and others v Edwards Lifesciences Corporation) provided further guidance, stating that conflicts where the EPO revokes a patent forming the basis of a UPC infringement decision "should, in principle, be avoided," but whether a stay is granted depends on a balance of interests and specific circumstances like the stage of proceedings and the likelihood of revocation.
Influential Decisions and Future Implications
Even in its early stages, UPC decisions are gaining influence. The recent decision of the EPO Enlarged Board of Appeal in G1/24 cited the ruling of the UPC Court of Appeal in NanoString v 10x Genomics, explicitly stating: “The Enlarged Board finds it a most unattractive proposition that the EPO deliberately adopts a contrary practice to that of the tribunals that are downstream of its patents.” This indicates a growing desire for harmonization between the two systems.
The UPC is set to play a vital role in European patent strategies for years to come. The interplay between UPC and EPO opposition proceedings offers numerous strategic options for businesses on both sides of patent disputes. Companies must now carefully consider how to integrate the UPC into their IP strategies, and the intersection when oppositions are involved, to maximize value and competitive advantage.
For any questions about UPC practice, please contact Caelia Bryn-Jacobsen or your usual Kilburn & Strode advisor.